Ex Parte Anderle et al

Board of Patent Appeals and Interferences

Jan 23, 2009

10939817 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KLAUS ANDERLE AND KLAUS CONRAD
____________

Appeal 2008-4033
Application 10/939,817
Technology Center 3600
____________

Decided: January 23, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

Opinion by HORNER, Administrative Patent Judge. Dissenting Opinion by
McCARTHY, Administrative Patent Judge.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Klaus Anderle et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of twice-rejected claims 16-24. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is a transport device for tape-media
having periodic markings including a device for determining the transport
speed of the medium and a related method (Spec. 1:6-10). Claim 16,
reproduced below, is representative of the subject matter on appeal.
16. A transport apparatus for a medium taking
the form of a strip having perforation holes, the
apparatus including a device for determining the
transport speed of the medium, the device
including a linear array sensor extending along the
transport direction and having a combined length
at least as long as one perforation hole and the
distance between two perforation holes in the
medium transport direction for imaging a selected
portion of the medium encompassing at least a pair
of spaced perforation holes along the transport
direction and a region between said pair of
perforation holes, comprising:

means for illuminating at least the selected
portion of the medium; and

a signal processing circuit connected to the
linear array sensor for determining the transport
speed of the medium from the output signals from
the linear array sensor; wherein the signal
processing circuit identifies characteristic intensity
patterns associated with at least the pair [of]
perforation holes and the region between
perforation holes and calculates the transport speed
of the medium from the displacement of the
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intensity pattern between a first read-out instant of
the linear array sensor and a subsequent read-out
instant and a read-out clock rate.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
DeLacy US 4,734,868 Mar. 29, 1988
Akira US 5,860,579 Jan. 19, 1999
Appellants seek our review of the following rejection:
The Examiner rejected claims 16-24 under 35 U.S.C. § 103(a) as
unpatentable over DeLacy in view of Akira.1

ISSUES
The Examiner found that DeLacy discloses determining paper
position by sensing intensity patterns from demarcations in the paper, and
Akira teaches using characteristic intensity patterns to determine the speed
of the moving paper (Ans. 3-5). Based on these findings, the Examiner
concluded claim 16 was unpatentable in view of DeLacy and Akira, because
DeLacy meets all of the elements of the claim, except that DeLacy
determines paper position but not speed, and Akira teaches the method of
calculating speed (Id.).
Appellants contend DeLacy and Akira fail to teach or suggest
identifying characteristic intensity patterns associated with at least a pair of
perforation holes and the region between those holes (App. Br. 8). More

1 Claims 1-15 have been cancelled.
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specifically, Appellants contend DeLacy’s device detects only the edges of
demarcations (e.g. sprocket holes), and Akira’s device counts perforations
passing over the detector, while in contrast, the claim requires detecting an
intensity pattern associated with at least a pair of perforation holes and the
region between those holes (App. Br. 9-10).
The issue before us is:
Have Appellants shown the Examiner erred because neither DeLacy
nor Akira discloses identifying characteristic intensity patterns associated
with at least a pair of perforation holes and the region between those holes?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. DeLacy discloses a paper transport and positioning system (DeLacy,
col. 3, l. 64).
2. An objective of DeLacy’s device is to provide accurate paper
positioning relative to a print head (DeLacy, col. 3, ll. 65-68).
3. DeLacy’s device positions the paper relative to known demarcation
points (DeLacy, col. 4, ll. 9-10).
4. DeLacy discloses two types of demarcations: edges and scribed
(inked) demarcations (DeLacy, col. 9, l. 67 to col. 10, l. 1).
5. DeLacy discloses the following examples of edge demarcations:
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a. Leading or trailing edges 5, 6 of paper (DeLacy, col. 6, ll. 54-64;
Figure 2. See also description of edge 40 at col. 8, ll. 49-55); and
b. Sprocket holes 2 in the paper (DeLacy, col. 6, ll. 54-64; Figure
1).
6. DeLacy discloses the following examples of scribed demarcations:
a. Printed visible or invisible demarcations (DeLacy, col. 4, ll. 51-
56); and
b. Lines of printed characters (DeLacy, col. 4, ll. 56-59).
7. Demarcations are detected by sensor 20 to provide paper position
feedback (DeLacy, col. 6, ll. 47-54).
8. Sensor 20 is comprised of photoemitter 31 and photodetector 33
(DeLacy, col. 6, ll. 54-64).
9. Photoemitter 31 illuminates the paper with electromagnetic energy,
and demarcations affect the reflection of that energy captured by
photodetector element 33 (DeLacy, col. 6, l. 64 to col. 7, l. 3).
10. Photodetector element 33 generates a signal in response to these
demarcations that can be used to position the paper (DeLacy, col. 7,
ll. 4-8).
11. DeLacy teaches that sensor 20 detects edges of demarcations for
paper positioning:
a. “As the paper is advanced to position the paper relative to the
print head, the sensor senses the location of the edge of the
demarcation and provides a positioning feedback signal to the
drive means for accurately positioning the print head relative to
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the demarcation” (DeLacy, col. 4, ll. 36-41).
b. “As the paper moves beneath or past the sensor array, the sensor
looks for an edge 40 indicating the beginning of a demarcation
which establishes a new reference signal 41” (DeLacy, col. 8, ll.
52-58).
c. “During the step advance of the paper, the movement of edge 60
projected onto photosensor 50 causes a corresponding electrical
signal to be generated for position feedback to the paper transport
drive servo” (DeLacy, col. 11, ll. 41-45).
12. DeLacy discloses the sensor generates a new reference signal 41
each time an edge 40 indicating the beginning of a demarcation
passes the sensor (DeLacy, col. 8, ll. 52-58).
13. DeLacy does not disclose the sensor detects distinguishable
arrangements of intensity fluctuations over time (characteristic
intensity patterns) (DeLacy, passim).
14. DeLacy does not disclose the sensor detects intensity patterns
associated with at least a pair of perforation holes and the region
between those holes (DeLacy, passim).
15. Akira discloses a transfer apparatus for long material (e.g.
photographic film) with physical markers at equal intervals (Akira,
col. 1, ll. 6-8).
16. Akira teaches the device detects the actual transfer rate by:
a. Detecting means 4, which detects the passing of the
perforations 21 in the negative film 2 to produce a detection
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signal a (Akira, col. 2, ll. 57-59; Figure 2a).
b. The detection signal a is converted by shaper circuit 41 to a
pulse signal b (Akira, col. 2, ll. 59-62, Figure 2b).
c. Pulse signal b has a string of pulses corresponding to the
number of the perforations 21 in the negative film 2 detected by
detecting means 4 (Akira, col. 3, ll. 29-31).
17. Thus, Akira’s device counts the passing perforations (with a known
distance between perforations) for a given period of time and then
calculates the speed of the medium based on the given that speed is
equal to distance divided by time.
18. Akira does not disclose calculating speed by comparing an intensity
pattern at a first read-out instant to an intensity pattern at a
subsequent read-out instant (Akira, passim).

PRINCIPLES OF LAW
Appellants’ Burden
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
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ANALYSIS
Claim 16
Claim 16 is directed to a transport apparatus for a medium having
perforation holes, the apparatus including a signal processing circuit that
“identifies characteristic intensity patterns associated with at least the pair of
perforation holes and the region between perforation holes and calculates the
transport speed of the medium from the displacement of the intensity pattern
between a first read-out instant of the linear array sensor and a subsequent
read-out instant and a read-out clock rate.”
Appellants did not define “characteristic intensity patterns.” During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). The Specification describes that linear
array sensor 23 detects illumination intensity (Spec. 8:13 to 9:18). When
this detected intensity is graphed over time (intensity as the ordinate and
time as the abscissa), then structures in the film, such as edges of perforation
holes, will cause fluctuations in the intensity over time that form
distinguishable arrangements (Id.). Characteristic intensity patterns are then
distinguishable arrangements of intensity fluctuations over time.
DeLacy discloses a paper transport and positioning system that
provides accurate paper positioning relative to the print head based on
known demarcation points (Facts 1-3). The device senses the edges of
demarcations such as paper edges (paper edges or sprocket holes) or scribed
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marks (printed marks or characters), and uses this information to position the
paper (Facts 4-12).
DeLacy’s device does not identify a characteristic intensity pattern
associated with at least a pair of perforation holes and the region between
those holes as required by the claim for two reasons.
First, DeLacy’s device does not detect distinguishable arrangements
of intensity fluctuations over time (Fact 13). Rather, DeLacy discloses the
device detects only the edges of demarcations (Fact 12).
Second, even if detection of an edge of a demarcation were considered
to be detection of an intensity pattern, DeLacy’s device does not detect such
a pattern for the area associated with a pair of perforation holes and the
region between those holes (Fact 14). Rather, DeLacy’s sensor generates a
reference signal each time the edge of a demarcation passes the sensor (Fact
12). In other words, the “region” detected is only the edge of a perforation
hole, not the area associated with a pair of perforation holes and the region
between those holes.
Turning to Akira, the rejection of claim 16 is based on Akira’s
purported teaching to use characteristic intensity patterns to determine the
speed of a moving medium (Ans. 8). However, contrary to the rejection,
Akira does not use the displacement of characteristic intensity patterns
associated with a pair of perforation holes and the region between those
holes to determine the speed of a medium for two reasons.
First, while Akira’s detection signal “a” appears to be a
distinguishable arrangement of intensity fluctuations over time, it does not
cover the region required by the claim. Each perforation is a single peak in
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the detection signal a, converted to a single pulse in the pulse signal b (Facts
16a and 16b). In other words, the region detected in Akira’s pulse signal is
the area associated with a single perforation, not the area associated with a
pair of perforation holes and the region between those holes.
Second, Akira’s device calculates speed by a different method than
required by the claim (Fact 18). Akira’s device counts the passing
perforations (with a known distance between perforations) for a given period
of time, and with this distance and time known, Akira’s device then
calculates the speed of the medium based on the given that speed is equal to
distance divided by time (Fact 17). In contrast, the claim requires
calculating speed by tracking the displacement of a particular intensity
pattern over a period of time (between a first read-out instant and a
subsequent read-out instant).
Given the difference between the prior art and the claim in the method
of calculating speed, and the fact that the Examiner provided no explanation
why a person of ordinary skill in the art would have modified Akira’s speed
calculation method to the method recited in the claim, the conclusion of
obviousness is incorrect.

Claim 24
Claim 24, a method claim similar to claim 16, was also rejected as
obvious in view of DeLacy and Akira. Claim 24 includes the limitations of
“determining intensity patterns from the output data of the linear array
sensor associated with at least the pair of the perforation holes and the region
between perforation holes” and “ascertaining the displacement of an
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intensity pattern between a first read-out instant and a subsequent read-out
instant and calculating the transport speed.” For the reasons discussed in the
analysis of claim 16, supra, the rejection of this claim based on the
combined teachings of DeLacy and Akira is also improper.

CONCLUSIONS
Appellants have shown the Examiner erred in rejecting claims 16-24
because DeLacy’s device does not identify a characteristic intensity pattern
associated with at least the pair of perforation holes and the region between
those holes. Further, Akira does not teach calculating speed by identifying
characteristic intensity patterns associated with at least a pair of perforation
holes and the region between those holes.

DECISION
We reverse the Examiner’s rejection of claims 16-24.
REVERSED

McCARTHY, Administrative Patent Judge, dissenting.

Claim 16 recites a transport apparatus comprising a signal processing
circuit connected to a linear array sensor for determining the transport speed
of a medium from the output signals of the linear array sensor. The claim
further recites that “the signal processing circuit identifies characteristic
intensity patterns associated with at least [a] pair [of] perforation holes and
the region between perforation holes.” Claim 24 recites a method including
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the step of “determining intensity patterns from the output data of the linear
array sensor associated with at least the pair of the perforation holes and the
region between perforation holes.”2 The Examiner rejects claims 16-24
under 35 U.S.C. § 103(a) (2002) as being unpatentable over DeLacy (US
4,734,868, issued Mar. 29, 1998) and Akira (US 5,860,579, issued Jan. 19,
1999). The Appellants group claims 17-23 with claim 16. (App. Br. 6). I
address claims 16 and 24 as representative of the claims on appeal. 37
C.F.R. § 41.37(c)(1)(vii) (2008).
The passages of DeLacy cited by the Examiner in support of the
rejection disclose a tractor feed paper transport printer (DeLacy, col. 5, ll.
56-58) including a position sensor (DeLacy, col. 6, ll. 47-49). The position
sensor includes photoemitter and photodetector elements positioned such
that there is an optical path therebetween that is intersected by sprocket
holes in the paper. (DeLacy, col. 6, ll. 54-64 and col. 8, ll. 12-16). The
Appellant argues that:

DeLacy discloses identifying only the edges
of the sprocket holes to determine the position of
the paper. Unlike the present principles, as
discussed above, DeLacy fails to teach or suggest
identifying multiple intensity references in

2 In the Reply Brief, the Appellants quote language from claim 24
reciting the step of “ascertaining the displacement of an intensity pattern
between a first read-out instant and a subsequent read-out instant and
calculating the transport speed.” The Appellant does not explain why this
limitation might not be met by the teachings of DeLacy and Akira. (See
Reply Br. 8). “A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”
37 C.F.R. § 41.37(c)(1)(vii) (2008). Therefore, I will not address this
limitation further in this dissent.
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addition to the intensity pattern associated with
edges of perforation holes. Specifically, DeLacy
fails to disclose or suggest identifying
characteristic intensity patterns associated with a
region between a pair of perforation holes, as
recited in claim 16.

(App. Br. 9 (emphasis in original)).
Akira discloses a negative film transfer apparatus. (Akira, col. 2, ll.
45-47). The apparatus includes a detection means for counting a number of
the perforations in the negative film and, in response, producing a detection
signal. (Akira, col. 2, ll. 57-59). The Appellant argues that “Akira discloses
identifying intensity patterns associated with perforation holes. Akira does
not disclose or suggest identifying characteristic intensity patterns associated
with the region between the holes.” (App. Br. 10 (emphasis in original)).
Although I disagree with my colleagues’ interpretation of the term
“characteristic intensity pattern” as used in claim 16, I find it unnecessary to
address the interpretation of the term in detail. I write separately to address
one issue:
Have the Appellants shown that the Examiner erred in
finding that DeLacy and Akira each disclose a signal processing
circuit which identifies “characteristic intensity patterns
associated with at least the pair [of] perforation holes and the
region between perforation holes?”
The Appellants do not define the term “characteristic intensity
patterns” expressly in their Specification. In the absence of an express
definition of a claim term in an underlying specification, the claim term is
given its broadest reasonable meaning in its ordinary usage as the term
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would be understood by one of ordinary skill in the art. In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997). Although the meaning given to claim
language must be consistent with the description of the invention in the
specification, Morris, 127 F.3d at 1054, limitations not explicit or inherent in
the language of a claim cannot be imported from the specification, E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
The term “characteristic intensity pattern” as used in claim 16 and the
term “intensity pattern” as used in claim 24 are broad enough to encompass
the intensity pulse detected when a sprocket hole or perforation passes
between an illumination device and an optical sensor. This interpretation is
consistent with the Specification, which states that “the film transport speed
can be detected by using not only the edges of perforation holes 24, but all
structures which lead to the formation of a characteristic intensity pattern
which can be identified by a processing circuit connected downstream.”
(Spec. 8, ll. 32-37). Indeed, the Appellants appear to concede that intensity
patterns associated with perforation holes are characteristic intensity
patterns. (See App. Br. 9 and 10 as quoted supra).
Each of DeLacy and Akira discloses identifying the intensity patterns
associated with perforation holes. (See, e.g., DeLacy, col. 8, ll. 52-59;
Akira, col. 2, ll. 57-64). The Appellants appear to concede that DeLacy and
Akira disclose making this identification. (See App. Br. 9 and 10 as quoted
supra). In other words, each of DeLacy and Akira discloses identifying
multiple characteristic intensity patterns associated with a pair of
consecutive perforation holes, one intensity pattern of the multiple
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characteristic intensity patterns being characteristic of each perforation hole
of the pair of holes.
The pair of perforation holes is associated with the region between
perforation holes. For purposes of this appeal only, I interpret the term
“region between perforation holes” narrowly as the region between the
antecedent pair of perforation holes. The Appellants do not define the term
“associated” in the Specification. The ordinary usage of the term
“associated” is broad, encompassing any relationship between two things.
The Examiner correctly found (see Ans. 6) that the region between the pair
of perforation holes is associated with the pair of perforation holes in the
sense that the region between the pair of perforation holes bounds and
thereby defines the perforation holes themselves. Stated differently, the
edges of the region between the perforation holes coincide with the edges of
the holes and the edges of the holes define the holes themselves.
The ordinary usage of the term “associated” is broad enough to
encompass an equivalence relationship. DeLacy and Akira each disclose
identifying characteristic intensity patterns associated with the pair of
perforation holes. The pair of perforation holes is associated with the region
between perforation holes. Therefore, DeLacy and Akira each disclose
identifying characteristic intensity patterns collectively associated with the
region between the perforation holes.
Therefore, I would conclude that the Appellants have not shown that
the Examiner erred in finding that each of DeLacy and Akira discloses a
signal processing circuit which identifies “characteristic intensity patterns
associated with at least the pair [of] perforation holes and the region between
perforation holes.” The Appellants do not provide convincing arguments
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that DeLacy and Akira fail to disclose or suggest any other limitation recited
in claims 16 and 24. Neither do the Appellants appear to contend that the
Examiner has failed to articulate reasoning having rational underpinnings
sufficient to explain how the combined teachings of DeLacy and Akira
would have suggested the subject matter of claims 16 and 24 as a whole. I
would sustain the rejection of claims 16-24 under § 103(a) as being
unpatentable over DeLacy and Akira. For this reason, I dissent.

vsh

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